Snowflake Factory, LLC

Trademark Trial and Appeal BoardMay 8, 2014

No. 85486420 (T.T.A.B. May. 8, 2014)

THIS OPINION IS NOT A PRECEDENT OF THE TTAB Mailed: May 8, 2014 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Snowflake Factory, LLC _____ Serial Nos. 85486419 and 85486420 _____ Jill M. Pietrini and Susan Hwang of Sheppard Mullin Richter & Hampton LLP for Snowflake Factory, LLC. Anne M. Farrell, Law Office 105 (Thomas G. Howell, Managing Attorney). _____ Before Cataldo, Shaw, and Hightower, Administrative Trademark Judges. Opinion by Hightower, Administrative Trademark Judge: On December 2, 2011, applicant Snowflake Factory, LLC filed two applications to register the mark OFF LEASH (in standard characters) based on a bona fide intention to use the mark in commerce pursuant to Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b). The first, Serial No. 85486419 (the “’419 application”), identifies the following goods in International Class 25, after amendment: Clothing, namely, bandanas; baby bibs not of paper; gloves; hooded shirts; infantwear; jackets; jerseys; loungewear; neckwear; pants; ponchos; scarves; shirts; shorts; skirts; sleepwear; socks; sweatpants; sweatshirts; Serial Nos. 85486419 and 85486420 2 t-shirts; tank tops; track pants; track suits; undergarments; vests; wind resistant jackets; belts; footwear; headwear. Registration of this application has been refused pursuant to Trademark Act Section 2(d) on the ground of a likelihood of confusion with the following mark: registered for hats, jackets, and shirts in International Class 25.1 The second application, Serial No. 85486420 (the “’420 application”), as amended, identifies the following goods in International Class 32: Non-alcoholic beverages, namely carbonated beverages; non-alcoholic beverages containing fruit juice; non- alcoholic beverages with tea flavor; fruit-based beverages; water beverages.2 Registration of the ’420 application has been refused on the ground of a likelihood of confusion with the mark OFF THE LEASH PURE ENERGY (in standard characters) registered for energy drinks in International Class 32.3 Applicant timely appealed. Both applicant and the examining attorney have filed appeal briefs, and an oral hearing was held on April 30, 2014. 1 Registration No. 4071726, issued December 13, 2011. 2 The identification was amended shortly after filing to delete “energy drinks.” 3 Registration No. 4084727, issued January 10, 2012. The two cited registrations have different owners. Serial Nos. 85486419 and 85486420 3 Appeals Consolidated We have considered all arguments and evidence filed in each case. Because the refusals to register are based on common issues of law and fact, as well as similar evidence and briefs, they are hereby consolidated and we will address them in a single opinion. Analysis Our determination under Section 2(d) is based on an analysis of all probative facts in evidence that are relevant to the factors bearing on the issue of likelihood of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973); see also In re Majestic Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion analysis, two key considerations are the similarities between the marks and the similarities between the goods or services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry mandated by § 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods and differences in the marks.”). We discuss each of the du Pont factors as to which applicant or the examining attorney submitted evidence. The ’419 Application We will address each application in turn, beginning with the ’419 application. A. Similarity of the Goods and Channels of Trade We first analyze the similarity of the goods and channels of trade, the second and third du Pont factors. The goods identified in cited Registration No. 4071726 are hats, jackets, and shirts. Applicant’s goods include headwear, jackets, and Serial Nos. 85486419 and 85486420 4 shirts (as well as hooded shirts, sweatshirts, t-shirts, and tank tops, all types of shirts). Hats are headwear. Applicant’s goods thus include goods identical to those in the cited registration. Because the jackets, shirts, and headwear described in the application are identical to the goods in the cited registration, we presume that the channels of trade and classes of purchasers are the same. American Lebanese Syrian Assoc. Charities Inc. v. Child Health Research Inst., 101 USPQ2d 1022, 1028 (TTAB 2011). See also In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (finding Board entitled to rely on this legal presumption in determining likelihood of confusion). It is well-established that we are bound by the identifications as written in the application and cited registration and cannot limit applicant’s or registrant’s goods – or their geographic territories, channels of trade, or classes of customers – to what any evidence shows them to be. In re Dixie Rests., Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1534 (Fed. Cir. 1997); In re Bercut-Vandervoort & Co., 229 USPQ 763, 764-65 (TTAB 1986). Here, neither identification contains any limitations. Therefore, applicant’s arguments pertaining to registrant’s references to his dog Rocko on his Facebook page as a means of distinguishing the goods and their marketing are irrelevant to our analysis.4 It is sufficient for a finding of likelihood of confusion if confusion is likely with respect to use of the mark on any item that comes within the description of goods in 4 See Appeal Brief, Application Serial No. 85486419, at 8-10. Serial Nos. 85486419 and 85486420 5 the application or registration. Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981); Apple Computer v. TVNET.net Inc., 90 USPQ2d 1393, 1397 (TTAB 2007). Accordingly, in our likelihood of confusion analysis, our findings under the second and third du Pont factors strongly support a finding of likely confusion. B. Similarity of the Marks We next consider the du Pont likelihood of confusion factor focusing on “‘the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression.’” Palm Bay Imps. Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005) (quoting du Pont, 177 USPQ at 567). “The proper test is not a side- by-side comparison of the marks, but instead ‘whether the marks are sufficiently similar in terms of their commercial impression’ such that persons who encounter the marks would be likely to assume a connection between the parties.” Coach Servs. Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012) (citation omitted). When, as here, marks would appear on identical goods or services, “the degree of similarity necessary to support a conclusion of likely confusion declines.” Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992); Jansen Enters. Inc. v. Rind, 85 USPQ2d 1104, 1108 (TTAB 2007). The purchaser’s fallibility of memory over a period of time must be kept in mind, Edom Labs. Inc. v. Lichter, 102 USPQ2d 1546, 1551 (TTAB 2012), and we focus on the recollection of the average purchaser, who normally retains a Serial Nos. 85486419 and 85486420 6 general rather than a specific impression of trademarks. See L’Oreal S.A. v. Marcon, 102 USPQ2d 1434, 1438 (TTAB 2012). Because the similarity or dissimilarity of the marks is determined based on the marks in their entireties, we cannot dissect the marks into their various components; that is, the decision must be based on the entire marks, not just part of the marks. See Stone Lion Capital Partners, LP v. Lion Capital LLP, __ F.3d ___, 110 USPQ2d 1157, 1161 (Fed. Cir. March 26, 2014); Franklin Mint Corp. v. Master Mfg. Co., 667 F.2d 1005, 212 USPQ 233, 234 (CCPA 1981) (“It is axiomatic that a mark should not be dissected and considered piecemeal; rather, it must be considered as a whole in determining likelihood of confusion.”). On the other hand, there is nothing improper in stating that, for rational reasons, more or less weight has been given to a particular feature of a mark, provided the ultimate conclusion rests on a consideration of the marks in their entireties. In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985). Applicant’s mark is OFF LEASH, in standard characters. The cited mark is . The literal portion of the cited mark is OFF MY LEASH, with a bouncing ball for the “o” and a leash forming the stylized “y” and “s.” Other than the possessive adjective “my,” the wording in the two marks is identical. We further observe that the term “my” in registrant’s mark is displayed in small characters relative to the other wording therein, and thus is visually less prominent. Because consumers are not literally kept on leash and dogs do not shop Serial Nos. 85486419 and 85486420 7 for clothing, we find that customers would consider the phrase OFF MY LEASH in association with (human) clothing to be a whimsical metaphor for unfettered “off leash” behavior, and would not view the term “my” as imbued with source- identifying significance. Although the design elements in the cited mark distinguish the marks somewhat visually, the wording in composite word and design marks normally is accorded greater weight in the likelihood of confusion analysis because consumers use the words to request the goods or services. See M.C.I. Foods Inc. v. Bunte, 96 USPQ2d 1544, 1551 (TTAB 2010). Moreover, the design in the cited mark depicts an off-leash dog bounding through the air after a ball, reinforcing the meaning of the phrase “off [my] leash.” We are not persuaded that the cited mark is diluted by the third-party registrations made of record by applicant, none of which contains both the terms OFF and LEASH.5 For these reasons, we find that applicant’s mark OFF LEASH is confusingly similar in sound, meaning, and overall commercial impression to the cited registered mark considered in its entirety. The first du Pont factor thus also weighs in favor of a likelihood of confusion between the cited mark and applicant’s mark. The ’420 Application We next discuss the ’420 application. 5 May 16, 2013 Request for Reconsideration, Exhibit F, 1 TTABVUE 51-94. Serial Nos. 85486419 and 85486420 8 A. Similarity of the Marks Applicant’s mark is OFF LEASH. The mark in cited Registration No. 4084727 is OFF THE LEASH PURE ENERGY. It is well-recognized that the definite article THE is insignificant as a source-identifier. See In re Thor Tech Inc., 90 USPQ2d 1634, 1635 (TTAB 2009); In re Narwood Prods., Inc., 223 USPQ 1034, 1034 (TTAB 1984); Conde Nast Publ’ns Inc. v. Redbook Publ’g Co., 217 USPQ 356, 357 (TTAB 1983) (noting that the word “the” cannot serve as an indication of origin). In addition, although the phrase PURE ENERGY is not disclaimed from the mark OFF THE LEASH PURE ENERGY, it is, at best, highly suggestive or descriptive in association with the goods identified in the cited registration, i.e., energy drinks. Descriptive or generic matter may have less significance in creating a mark’s commercial impression and little weight in likelihood of confusion determinations. See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1846 (Fed. Cir. 2000) (“Regarding descriptive terms, this court has noted that the ‘descriptive component of a mark may be given little weight in reaching a conclusion on likelihood of confusion.’”) (quoting In re Nat’l Data Corp., 224 USPQ at 752). We also note that applicant’s mark OFF LEASH is nearly identical to the first phrase in the cited mark, OFF THE LEASH, reinforcing the similarity between the marks. See Presto Prods. Inc. v. Nice-Pak Prods. Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (noting that “it is often the first part of a mark which is most likely to be impressed upon the mind of a purchaser and remembered”). See also Palm Bay Imps. Inc., 73 USPQ2d at 1692; Century 21 Real Estate Corp., 23 USPQ2d at 1700. Serial Nos. 85486419 and 85486420 9 Applicant’s arguments concerning registrant’s current display of its mark on its goods are not well-taken.6 Rather, because the cited registration is in standard characters, we must consider it to cover the registered mark in any format. See Citigroup Inc. v. Capital City Bank Group Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1259 (Fed. Cir. 2011). Nor are we persuaded that the cited mark is diluted by the third-party registrations made of record by applicant, none of which contains both the terms OFF and LEASH.7 We find that applicant’s mark makes a similar overall commercial impression to the cited mark. The first du Pont factor weighs in favor of a likelihood of confusion between the cited registered mark and applicant’s mark. B. Similarity of the Goods We next consider the second du Pont factor, the similarity of the goods. The goods need not be identical or even competitive in order to support a finding of a likelihood of confusion. Rather, it is enough that the goods and services are related in some manner or that some circumstances surrounding their marketing are such that they would be likely to be seen by the same persons under circumstances which could give rise, because of the marks used therewith, to a mistaken belief that they originate from or are in some way associated with the same producer or that there is an association between the producers of the respective goods and services. In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991); Schering Corp. v. Alza Corp., 207 USPQ 504, 507 (TTAB 1980). 6 See Appeal Brief, Application Serial No. 85486420, at 5-6. 7 May 16, 2013 Request for Reconsideration, Exhibit E, 1 TTABVUE 29-42. Serial N R drinks,” carbona beverag T features contain cranber goods ov beverag argume In party re those id 8 Novem 9 Id. at 1 10 See Ap os. 854864 egistrant’s applican ted bevera es with tea he examin similar o tea, orang ry, lime, an erlap with es with te nt that the addition gistration entified in • f and (Regi • flavor non-a No. 3 ber 12, 2012 1-12 (from peal Brief, 19 and 85 goods are t’s ident ges; non-a flavor; fru ing attorn r identical eade, and d blueber registran a flavor” re is no ov , the exam s covering the applic or “energy “non-alco stration N for “b ed drinks lcoholic b 927006); final Offic redbullusa. Application 486420 “energy ified good lcoholic b it-based b ey submit to applica lemonade. ry energy t’s goods b and “fruit erlap betw ining atto both ene ation. The drinks; fr holic bev o. 3955948 ottled wat ,” and “no everages, n e action at com). Serial No. 10 drinks.” A s are “ everages c everages; ted eviden nt’s goods 8 There is drinks.9 T ecause som -based be een the go rney made rgy drinks se registra uit flavore erages, ); er,” “drin n-alcoholic amely, ca 9-10 (from m 85486420, fter amen non-alcoho ontaining water beve ce that s . “Monst also evid his eviden e energy verages,” ods.10 of record and good tions incl d drinks; namely, king wate beverage rbonated onsterene at 8-10. dment to lic bever fruit juice rages.” ome energ er Rehab” ence that R ce shows t drinks are undercutti eleven us s similar ude: fruit-flavo carbonate r; energy s containin beverages rgy.com). delete “en ages, nam ; non-alcoh y drinks h energy dr ed Bull o hat applica “non-alcoh ng applica e-based, th or identica red bevera d bevera drinks; g fruit ju ” (Registra ergy ely olic ave inks ffers nt’s olic nt’s ird- l to ges” ges” fruit ices; tion Serial Nos. 85486419 and 85486420 11 • A MORE MEANINGFUL LIFE for “energy drinks; fruit drinks and fruit juices; non-alcoholic beverages containing fruit juices” (Registration No. 4115794); • NEUROSPLASH (Registration No. 4084949) and NEUROSUPREME (Registration No. 4113103), both for “non-alcoholic beverages, namely, mineral and aerated waters, fruit drinks, energy drinks, fruit flavored drinks, herbal juices and isotonic drinks”; • LIKE for “non-alcoholic beverages, namely, mineral and aerated waters; flavored waters, fruit drinks, energy drinks, fruit flavored drinks, herbal juices and isotonic drinks” (Registration No. 4104788); and • for “orange juice beverages,” “apple juice beverages,” “fruit beverages; energy drinks; fruit juices” and “non-alcoholic fruit juice beverages” (Registration No. 4101698).11 These registrations show that applicant’s goods and registrant’s goods are of a kind that may emanate from a single source under a single mark. In re Davey Prods. Pty. Ltd., 92 USPQ2d 1198, 1203 (TTAB 2009). Although the registrations are not evidence that the marks shown therein are in use or that the public is familiar with them, the registrations nonetheless have probative value to the extent that they serve to suggest that the identified goods are produced or marketed by a single source under a single mark. See Venture Out Props. LLC v. Wynn Resorts Holdings LLC, 81 USPQ2d 1887, 1893 (TTAB 2007). Based on the record evidence, we find that applicant’s beverages are similar or related to those in the cited prior registration. The second du Pont factor supports a finding that confusion is likely with respect to the ’420 application. 11 March 21, 2012 Office action at 6-34. Some goods are omitted from the above summaries. Serial Nos. 85486419 and 85486420 12 Consumer Sophistication Finally, we address applicant’s arguments under the fourth du Pont factor with respect to both applications.12 Assuming that consumers of hats, jackets, shirts, and energy drinks exercise care in their purchases, “even consumers who exercise a higher degree of care are not necessarily knowledgeable regarding the trademarks at issue, and therefore immune from source confusion.” Edom Labs. Inc., 102 USPQ2d at 1552. See also In re Research & Trading Corp., 793 F.2d 1276, 230 USPQ 49, 50 (Fed. Cir. 1986) (“Human memories even of discriminating purchasers . . . are not infallible.”) (quotation omitted). We find the fourth du Pont factor to be neutral. Conclusion For the foregoing reasons, we find that, on balance, the relevant du Pont factors weigh in favor of a finding of likelihood of confusion between applicant’s mark OFF LEASH and the cited registered marks and OFF THE LEASH PURE ENERGY in association with applicant’s identified goods. To the extent there are any doubts, we resolve them, as we must, against applicant as the newcomer and in favor of the registrant. Nike Inc. v. WNBA Enters. LLC, 85 USPQ2d 1187, 1202 (TTAB 2007); Hard Rock Café Int’l (USA) Inc. v. Elsea, 56 USPQ2d 1504, 1514 (TTAB 2000). Decision: The refusals to register are affirmed. 12 See Appeal Brief for each application at 10.